Wednesday, September 24, 2014

Recently, I undertook a project at my law school to assess the impact of our faculty’s publications. Building off of this work, I put together lists of the most cited IP law articles over the last decade (using HeinOnline).

Below are the most cited IP articles published from 2004-2008 and 2009-2013 (with embedded HeinOnline links to the articles). I report the top 25 most-cited IP articles published in each time period as well as the top 20 most-cited articles (with a minimum of 20 citations) in copyright, patent, trademark, and trade secret law.

In four patentable subject matter cases in the past five Terms, the Supreme Court has reaffirmed the judicially created prohibitions on patenting “abstract ideas” and “nature,” but the boundaries of these exceptions remain highly contested. The dominant justification for these limitations is utilitarian: courts create exemptions in areas where patents are more likely to thwart innovation than to promote it. The resulting debates thus focus on whether patents are needed to provide adequate innovation incentives in disputed fields such as software or genetic research, or whether private incentives such as reputational gains, first-mover advantages, or competitive pressures are sufficient. These debates frequently overlook a significant fact: the absence of patents does not imply that there would be only private incentives. Rather, federal and state governments facilitate financial transfers to researchers through a host of mechanisms—including tax incentives, direct grants and contracts, prizes, and regulatory exclusivity—which already provide substantial research support in the fields where patents are the most controversial.

Paying attention to non-patent incentives could prevent courts from being misled by the concern that a lack of patents for a certain type of invention would remove all incentives for nonobvious and valuable research in that field. Non-patent innovation incentives could also help ease the tension between utilitarian and moral considerations in the current patentable subject matter debates: if many people find patents on certain inventions (such as “human genes”) morally objectionable, utilitarian goals can still be served by using other transfer mechanisms to substitute for the incentive provided by patents. Indeed, non-patent incentives may be more effective than patents in contested areas, where inventors who share moral objections find little incentive in patents, and those who do not still find the patent incentive to be dulled by the persistent uncertainty that has plagued patentable subject matter doctrine in recent years. Wider appreciation of the range of innovation incentives would help bring patentable subject matter discussions in line with the realities of scientific research, and might even make this doctrinal morass more tractable.

Wednesday, September 17, 2014

In patent cases, the term “hindsight bias” refers to fact-finders’
tendency to use their knowledge of the invention at issue in their analysis of
whether that invention would have been obvious. This error occurs when
fact-finders ignore the rule that obviousness of a claimed invention must be
evaluated at the time of patent filing rather that at the time of litigation.
Professor Sean Seymore’s latest article, Foresight Bias in Patent Law, deals with an error that implicates the future rather than the past.
Seymore is concerned with the utility requirement, which denies patents on
chemical compounds that lack a demonstrated consumer end use, such as a
therapeutic use, and on methods of making such compounds. Foresight Bias builds on Seymore’s earlier article, Making Patents Useful, which criticizes
the utility requirement for being too subjective and calls for its elimination.
Seymore’s work may be contrasted to that of Professor Michael Risch, who sees a greater role for the utility requirement (see also here).

Tuesday, September 16, 2014

I am delighted to welcome Stanford Law & Biosciences Fellow Dmitry Karshtedt as a new Written Description blogger. Before going into law, Dmitry completed a Ph.D. in chemistry from UC Berkeley and worked as a staff scientist for a semiconductor materials startup. After he received his J.D. from Stanford Law School, Dmitry practiced at Wilson Sonsini and clerked for Judge Moore on the Court of Appeals for the Federal Circuit. Given his extensive background in both science and patent law, I look forward to hearing Dmitry's thoughts on new IP scholarship, and to seeing his own new publications!

Last Friday I presented my latest essay, Patentable Subject Matter and Non-Patent Innovation Incentives, at UC Irvine's Meaning of Myriad Conference, which included a terrific line-up of speakers. Brittany Ngo, a 3L at UC Irvine, nicely recapped the conference for IP Watch: Experts Look At The Meaning Of Myriad Case, One Year Later. Her article is paywalled, but it is published under the CC BY-NC-ND license, so I am redistributing the article here (with attribution, for noncommercial use, and without modification).

Tuesday, September 2, 2014

Everyone seems to love new rankings! Inspired by Dan Burk's lists of IP scholars by h-index and m-index, Christopher Yoo (Penn Law) calculated cumulative h-index and m-index rankings by school. He thought the results might of interest to Written Description readers. I'm posting them because I think they have some value in identifying schools with a strong commitment to IP scholarship, although I don't recommend relying on these rankings when choosing a school (nor, for that matter, do I recommend relying on US News IP or Law Street or Patently-O or any other numerical ranking).